IP Infringement Vs Fair Use!

Our top story this week is a classic David vs Goliath tale. It involves a 31 year old tech blogger. All he did was run a Flipkart vs Amazon poll online! Why then has Flipkart accused this tech blogger of trademark infringement? Should we be yelling fair use, intimidation and chilling effect or is Flipkart justified in such IP protection? Aayush Ailawadi finds out…

Imagine waking up one fine morning to find out that one of the country’s largest e -commerce companies is accusing you of trademark infringement, copyright infringement and ‘cybersquatting’. Well, that’s exactly what happened to Amit Bhawani…

Hyderabad based Amit Bhawani runs tech websites like PhoneRadar and Android Advices. He reviews and compares smartphones, smartwatches, apps, operating systems and other technology. Last month he launched a website called amazonvsflipkart.com, to conduct a poll comparing Flipkart and Amazon India on a number of counts such as service, interface, discounts, deals, returns and replacement policy. He also used the logos of Flipkart and Amazon.

“Being a blogger, I keep reviewing smartphones, I had a doubt, which website is better, Amazon or Flipkart that the users would be interested in and it was just a fun poll that I created on a website called ‘amazonvsflipkart’. It was just a simple website which had simple poll asking users to vote on a few factors like design, pricing and a few other factors and there was no commercial activity behind it.”

But, Flipkart wasn’t amused. The company sent him a ‘cease and desist’ notice accusing him of trademark infringement, copyright infringement and cyber squatting. In a strongly worded letter, Flipkart asked Amit to take down the website within 7 days, barring which it would take further action. It was the first such notice that Amit has ever received in his life. He immediately took down the site and informed Flipkart that he had done so.

“This was no way part of my usual business, so I didn’t take the initiative to fight with Flipkart, but again thanks to the all the support of all the people in the industry, they have told me that this is actually wrong and that Flipkart has done a very strong thing against me by sending the legal notice.”

Flipkart’s Response to ‘The Firm’

“We respect the right to freedom of speech and endeavor to carry out research and polls. However, the legal notice was issued in the interest of safeguarding our goodwill, brand and trademarks. We contend that the language employed in the said notice was stronger than intended, and will make necessary corrections for any future communication. Pursuant to our notice, the offending trademark infringement has been taken down. In view of the above, our communication has now become irrelevant.”

In its response to our query, Flipkart admits the language used by it in this notice is strong, but it also insists that Amit’s website violated its brand, trademark and goodwill.

“I am still shocked as to what Flipkart has done and I am still worried as to what will be the consequences, they have not acknowledged the fact that I have taken this down or that I have sent them a mail. This is not done! What about my freedom of speech? I can’t write about them as a fair comparison? This is something which lawyers can help me out and the community to understand what is fair use and what all content can we publish on the Internet.”

Well then let’s bring in the lawyers! To find out if what Amit did amounts to fair use of a trademark or not….

Abhishek Malhotra is an IP Law expert and Managing Partner at TMT Law Practice in Delhi. He reckons that Amit could have used doctrine of ‘fair use’ as a defence…

Abhishek MalhotraManaging Partner, TMT Law Practice

“Fair use is usually employed by let’s say for the lack of a better word, a proposed defendant or someone who is defending that particular action as a use which is Not really impinging upon the commercial interests of the party concerned, but in this particular case being used more for a fair comment of collecting some evidence in terms of how popular a particular website or a product or a service is. In that relation it could possibly qualify as fair use and it is what we refer to in trade mark law as nominative fair use. You are using the nomination of that particular trade mark in a fair manner to communicate a fair message. Similarly, in copyright there is an entire provision of Section 52 which talks about fair dealing and there also you have the possibility of using an artistic work in relation to a fair comment. Now, how much of that is a fair comment, what is the amount of usage that ought to have been taken for this to be construed as fair dealing or not is something of course, that could be considered in the circumstances by the court of law, but in this instance given the fact that his poll was not sponsored by either of the two parties, it of course seems that it may have just been at his own instance for his own academic interests and if he can demonstrate a lot of that then it’s definitely a fair use!”

Delhi based senior advocate and well known IP lawyer Prathiba Singh sees nothing wrong with Flipkart’s notice. In fact she says the use of Flipkart in a domain name could justifiably worry the company.

Prathiba SinghSenior Advocate

“From the way I look at this notice, I think because the man is using Flipkart in his domain name, it’s a regular notice to protect the mark. I don’t think they are intending to intimidate anybody, they have a problem with the domain name being used. But, simple use of a domain name could be a problem because somebody could be directed to that domain name while he is looking for Flipkart and if he is looking for Amazon, he may be directed to that domain!”

But, Amit maintains that the website was a research tool and nothing more. He took it down immediately because he didn’t want to battle one of the country’s biggest e-commerce companies.

“It’s just the fear! What happens when you get the first legal notice in your life, and for no reason? If it’s for my own business, I would have fought for it. But this was just a fun poll, there was no business being done, then why would I fight for it? Later, I realized I shouldn’t have taken it down and should’ve fought with Flipkart. But, then I don’t know the consequences of taking on a giant like Flipkart!”

Abhishek MalhotraManaging Partner, TMT Law Practice

“If Amit had just used the word Flipkart maybe he would not have received this notice. Because of the fact that the logo was used, which was not necessary for sending out that comment. But in today’s day and age, is what springs to one’s mind is that the comment is about Flipkart, so in a sense my answer is it may help people to take a conscious search or research of what they can and cannot use. In that sense, it is not that bad, but if these instances proliferate, they could result in a chilling effect.”

Chilling effect refers to legal action taken to silence journalists. So, does this mean that all journalists need to be wary while reporting about Flipkart? Should I even be using their logo right now?

Prathiba SinghSenior Advocate

“Genuine news reporting cannot be violation of a brand. So if you are using Flipkart on your show, to discuss the issue then that can never be illegal use of the mark because you are not promoting your business on the basis of that. Whereas a website, which is created like amazonvsflipkart.com, tomorrow he may do ‘marutivshyundai’, ‘pepsivscoke’ and he may create a business model out of it. So there are things you have to safeguard against. Obviously CNBC doesn’t fall in that category. CNBC is a genuine accredited news channel, but every other blogger or website owner need not be like CNBC.”

Phew!! That’s good to know, but what if Amit hadn’t taken this website down, would Flipkart have sued him? Or was this notice just meant to intimidate him?

Abhishek MalhotraManaging Partner, TMT Law Practice

“Because of the fact that it will be more to send a message, it is unlikely in most such cases that the company would take action against an individual in a court of law, which is why they have sent out a legal notice to begin with. If the company really wanted to take this person to court then they could have done that immediately, they need not have first sent a notice and then waited whether there is compliance of that notice, then to wait and file a suit. So I think this is more to send out a message that we are a company which is interested in protecting our IP rights and therefore we would like people to respect the same.”

In an increasingly digital world, enforcing one’s intellectual property is a tough task even for India’s new age companies. For now, Flipkart may have succeeded in protecting its intellectual property online, but as IPR awareness increases, it will be interesting to see how companies will tackle such cases.